Tracy Jong

“Reserve” Variations May Not Be Protectable as Trademarks

“Reserve” is a common term used in the hospitality industry by hotels and restaurants. Common terms are difficult to register as trademarks if they have a connection in the mind of the consumer to the product or service. In that situation, they take on a descriptive role. Since potential customers might consider the term as descriptive of the business rather than a specific brand, it is not functioning as a trademark.

Even when there is a family of marks incorporating the “reserve” term,  they may be registrable because “ there is almost no other substitute”  term to be used, quoting a California District Judge in a recent case Reserve Media Inc v.  Efficient Frontiers Inc, case no 2:15-cv-05072 ( C. D. Cal)  who ruled that “courts should be particularly cautious about allowing any single private actor to monopolize use of the term.” The court found that mark containing the “reserve” term were weak as a matter of law, descriptive and generally lacking secondary meaning as source identifying indicia.

The craft beverage and wine industry should take note of this decision as the “reserve” term plays a significant role in the alcoholic beverage industry. In a similar fashion, the term is widely used and recognized, and there are not many alternative terms that could be substituted.

There are three approaches that can be taken by wineries or other craft beverage manufacturers finding themselves in this position:

  1. Consider relying on common law trademark rights rather than register the mark on a state or federal trademark register.  Even if unregistrable, businesses can use the term.
  2. Implement strategic marketing tactics to create secondary meaning where consumers do find it to have a source indicating function.
  3. Develop combined word mark that contains a dominant term that is distinctive by itself. When “reserve” is only a part of a combined term mark with a different commercial impression, it will generally be registrable.

These are practical approaches to the situation, but certainly not an exhaustive list. Do you have any additional ideas or strategies a craft beverage manufacturer might adopt if it uses the term “Reserve” in its alcoholic beverage names?